MILWAUKEE ELECTRIC TOOL CORPORATION

Patent Trials and Appeals Board

Jul 1, 2020

2019006201 (P.T.A.B. Jul. 1, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/838,126 03/15/2013 Brandon L. Verbrugge 066042-8495-01 2897
60840 7590 07/01/2020
MICHAEL, BEST & FRIEDRICH LLP (MT)
790 N WATER ST
SUITE 2500
MILWAUKEE, WI 53202
EXAMINER
KOTIS, JOSHUA G
ART UNIT PAPER NUMBER
3731
NOTIFICATION DATE DELIVERY MODE
07/01/2020 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
MKEIPDOCKET@MICHAELBEST.COM
milwaukeeip@milwaukeetool.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BRANDON L. VERBRUGGE, MATTHEW J. MERGENER,
MATTHEW P. WYCKLENDT, JEFFREY C. HESSENBERGER, and
DENNIS J. GRZYBOWSKI
Appeal 2019-006201
Application 13/838,126
Technology Center 3700
Before JENNIFER D. BAHR, DANIEL S. SONG, and
MICHAEL J. FITZPATRICK, Administrative Patent Judges.
BAHR, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–17, 21, 23, 25, and 28–39.2 We have
jurisdiction under 35 U.S.C. § 6(b). We AFFIRM IN PART.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42(a). Appellant identifies the real party in interest as Milwaukee
Electric Tool Corporation. Appeal Br. 2.
2 Claims 18–20, 24, and 26 have been withdrawn from consideration. Final
Act. 1 (Office Action Summary); Appeal Br. 38, 40, 41 (Claims App.).
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CLAIMED SUBJECT MATTER
Appellant’s invention is directed to “a hand-held power tool that
includes a motor and is powered by a battery pack.” Spec. ¶ 2. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. A hand-held power tool comprising:
a housing including a body and a handle portion;
a battery pack removably coupled to the housing, the
battery pack including a plurality of lithium-based battery cells;
a trigger switch configured to generate a trigger signal;
a first battery terminal and a second battery terminal
configured to electrically connect to the battery pack;
a brushless direct-current (“BLDC”) motor;
a switching array including a plurality of switching field
effect transistors (FETs) electrically connected between the
BLDC motor and the first battery terminal and the
second battery terminal, the plurality of switching FETs
configured for controlling application of power to the BLDC
motor, wherein the plurality of switching FETs have a drain-to-
source resistance of below 3 milli-Ohms;
a controller configured to
receive the trigger signal from the trigger switch,
and
generate a control signal based on the trigger
signal to selectively enable and disable each of the
plurality of switches in the switching array to drive the
BLDC motor with power provided from the battery pack;
and
an output shaft coupled to the BLDC motor to provide an
output of the hand-held power tool,
wherein the hand-held power tool produces an average
long-duration power output of at least 300 Watts and a
maximum short-duration power output of at least 400 Watts,
and wherein the average long-duration power output is the
average power output over one discharge cycle of the battery
pack continuously from a fully-charged level until the battery
pack reaches a low-voltage cutoff.
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REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Peot US 5,856,715 Jan. 5, 1999
Brotto US 2007 /0193761 A1 Aug. 23, 2007
Liebhard US 2010/0218966 A1 Sept. 2, 2010
Toukairin US 2010/0283332 A1 Nov. 11, 2010
Tanimoto US 2011/0171887 A1 July 14, 2011
Yanagihara US 2012/0152583 A1 June 21, 2012

REJECTIONS3
Claim 39 stands rejected under 35 U.S.C. § 112, fourth paragraph, as
being of improper dependent form for failing to further limit the subject
matter of claim 1, from which it depends.
Claims 1–3, 6, 7, 10–12, and 39 stand rejected under
35 U.S.C. § 102(a) and (e) as anticipated by Yanagihara.
Claims 4, 5, 8, and 9 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Yanagihara and Peot.
Claims 21 and 23 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Yanagihara, Tanimoto, and Peot.
Claims 13, 14, 25, 28, and 30 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Yanagihara and Liebhard.
Claims 15, 16, and 29 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Yanagihara, Liebhard, and Peot.

3 The Examiner has withdrawn several other rejections set forth in the Final
Action. See Ans. 5.
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Claims 31–34 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Yanagihara and Toukairin.
Claims 35 and 36 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Yanagihara, Tanimoto, Peot, and Toukairin.
Claims 37 and 38 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Yanagihara, Liebhard, and Toukairin.
Claim 17 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Yanagihara and Brotto.
Claims 1–3, 6, 7, 10–14, 17, 25, 28, 30–34, 37, and 38 stand rejected
under 35 U.S.C. § 103(a) as unpatentable over Toukairin and Yanagihara.
Claims 1–3, 6, 7, 10–14, 17, 25, 28, 30–34, 37, and 38 stand rejected
under 35 U.S.C. § 103(a) as unpatentable over Toukairin, Yanagihara, and
Liebhard.
OPINION
Improper Dependent Form—35 U.S.C. § 112, fourth paragraph
The Examiner accepts Appellant’s asserted definition of “‘low-
voltage cutoff’ . . . as ‘the voltage at which discharge of the battery cell (or
battery pack) is ceased to prevent damage from deep discharge to the battery
cell (or a battery cell of the battery pack).’” Ans. 6 (acknowledging that this
term “is a well-known term in the art of lithium ion batteries”); see Appeal
Br. 8 (setting forth this definition). We discern no error in this interpretation
and likewise adopt this interpretation, which appears consistent with the
disclosure in paragraph 122 of Appellant’s Specification. However, given
this interpretation of “low-voltage cutoff” in claim 1, the Examiner
determines that claim 39, which depends from claim 1, does not further limit
the scope of claim 1. Ans. 22.
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Claim 1 recites that the “power tool produces an average long-
duration power output of at least 300 Watts” and that “the average
long-duration power output is the average power output over one discharge
cycle of the battery pack continuously from a fully-charged level until the
battery pack reaches a low-voltage cutoff.” Appeal Br. 35–36 (Claims
App.). Claim 39 recites that “the battery pack reaches the low-voltage cutoff
based on a battery cell of the plurality of lithium-based battery cells reaching
a discharge voltage cutoff indicating a natural end of battery cell discharge.”
Id. at 44.
Appellant’s only argument contesting the rejection of claim 39 under
35 U.S.C. § 112, fourth paragraph, as failing to further limit claim 1 from
which it depends, is predicated on an assumption that the Examiner will
continue to reject Appellant’s asserted definition of “low-voltage cutoff.”
Appeal Br. 13 (contending that “in the event that the Examiner continues to
do so, claim 39 provides further definition at least in this aspect” and that
“[c]laim 39 provides a precise articulation of this point”). Given that the
Examiner now accepts Appellant’s asserted interpretation, and we likewise
adopt this interpretation, Appellant’s argument is moot and fails to apprise
us of error in the Examiner’s rejection. Accordingly, we sustain the
rejection of claim 39 under 35 U.S.C. § 112, fourth paragraph.
Anticipation—Yanagihara
In contesting the anticipation rejection, Appellant presents arguments
for claim 1 and for claim 39. See Appeal Br. 16–21, 33. Appellant does not
present any separate arguments for claims 2, 3, 6, 7, or 10–12 aside from
their dependence from claim 1. We decide the rejection of claims 1–3, 6, 7,
and 10–12 on the basis of claim 1, and we address claim 39 separately. See
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37 C.F.R. § 41.37(c)(1)(iv) (permitting the Board to select a single claim to
decide the appeal as to a single ground of rejection of a group of claims
argued together).
Claims 1–3, 6, 7, and 10–12
Appellant argues that Yanagihara does not disclose, either expressly
or inherently, that the “power tool produces an average long-duration power
output of at least 300 Watts . . . wherein the average long-duration power
output is the average power output over one discharge cycle of the battery
pack continuously from a fully-charged level until the battery pack reaches a
low-voltage cutoff,” as recited in claim 1. Appeal Br. 16–21. Appellant
contends that the asserted “features are not intended use of the apparatus but,
rather, structurally and functionally describe what the claimed hand-held
power tool is.” Id. at 19. Further, Appellant submits that “[t]he Examiner
appears to presume that, because the tool is disclosed as being capable of
achieving certain outputs at certain times, it must be able to maintain such
outputs through a complete discharge cycle.” Id. at 19. However, Appellant
argues that the Declaration of inventor Matt Mergener, dated September 8,
2017 (entered into the electronic record on September 15, 2017, hereinafter
“Mergener Declaration” or “Mergener Decl.”), shows that “merely because a
power tool can, at times, produce a particular power output, it does not
necessitate that such power tool can provide a long-duration power output at
the same level over a discharge cycle.” Id. at 19–20.
We agree with Appellant that the “wherein the hand-held power tool
produces . . . until the battery pack reaches a low-voltage cutoff” recitation
in claim 1 constitutes a functional limitation of the claimed power tool. “A
patent applicant is free to recite features of an apparatus either structurally or
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functionally . . . Yet, choosing to define an element functionally, i.e., by
what it does, carries with it a risk.” In re Schreiber, 128 F.3d 1473, 1478
(Fed. Cir. 1997). Once the Examiner establishes a reasonable basis that the
prior art is capable of performing the claimed function, the burden shifts to
the applicant to show that the prior art structure is not capable of performing
the claimed function. In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997).
We note that Appellant argues that the claim language in question “is
directed to how the hand-held power tool is configured,” rather than to a
manner in which it “is intended to be employed.” Reply Br. 3. However,
claim 1 does not recite that the power tool is “configured to” produce such
output. The only “configured to” language in claim 1 pertains to the
“controller,” which is “configured to receive a trigger signal . . . and
generate a control signal.” Appeal Br. 35 (Claims App.). Thus, the
principle of In re Giannelli, 739 F.3d 1375 (Fed. Cir. 2014), under which the
court looked to the written description of the application and determined that
the phrase “adapted to” in view of the specification, has a narrower meaning
than “capable of” or “suited for,” does not apply to the average long-
duration power output limitation of claim 1.
In setting forth the basis for the determination that Yanagihara’s
power tool is capable of producing an average long-duration power output of
at least 300 Watts over one discharge cycle of the battery pack continuously
from a fully-charged level until the battery pack reaches a low-voltage
cutoff, the Examiner finds that, as evidenced by a data sheet referenced by
the Examiner, cutoff voltages of lithium-ion batteries, which are the type of
battery cells disclosed by Appellant, as well as the type of battery cells
disclosed by Yanagihara (Yanagihara ¶ 33), are known to be in a range from
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approximately 2.5–3.0 Volts and in some instances as low as 2.4 Volts.
Final Act. 31. Appellant does not specifically contest this finding. See
Appeal Br. 19 (acknowledging the low-voltage cutoff identified by the
Examiner). The Examiner provides calculations to support the finding that,
in permitting the tool to operate without reducing the maximum duty ratio as
long as the applied current does not exceed 50 amps, Yanagihara provides an
operating condition under which an average power output of 450 Watts,
which is greater than 300 Watts as claimed, will be sustained throughout the
discharge cycle as claimed. See Ans. 9–11. Based on the Examiner’s
calculations, the Examiner concludes that even when Yanagihara’s battery
pack reaches its lowest operational voltage (12 volts, assuming the lowest
cutoff voltage of 2.4 Volts per cell for each of the five serially-connected
pairs of cells),4 as well as at higher operational voltage up to and including
the fully charged nominal voltage of 18 volts, Yanagihara’s power tool “will
clearly provide the claimed power outputs if the load applied to the tool
requires the corresponding current draw.” Id. at 11. Further, the Examiner
observes that Yanagihara discloses all of the recited structure of claim 1,
and, thus, “is capable of performing the claimed functional outputs.” Id.
The Examiner emphasizes that “Appellant has not pointed out any further
structural limitations that are being implied by the claimed power limits.”
Id. In this regard, we note that Appellant does not attribute the claimed
power output capabilities to any structure beyond the structural elements

4 Notably, the Examiner’s assumption of 2.4 Volts for each of the cells of
the battery pack leads to a conservative estimate of the voltage of the battery
pack at “low-voltage cutoff” as defined by Appellant in claim 39, which
requires only one of the cells to reach a discharge voltage cutoff level. See
Appeal Br. 44 (Claims App.).
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recited in the language of claim 1 preceding the “wherein” clause, all of
which structural elements the Examiner finds disclosed in Yanagihara. See,
e.g., Spec. ¶ 11 (discussing reducing the internal resistance of one or more of
the motor, battery pack, and electronics and improving the ability of the
power tool to dissipate heat), ¶¶ 39–40 (disclosing the use of FETs having a
drain-to-source resistance of below approximately 3.0 milli-Ohms to enable
increased drive currents to be passed through the FETS and provided to the
motor); Yanagihara ¶¶ 9–10 (disclosing MOS-FET resistance at or below 3
milliohm to increase overall electric efficiency), ¶ 44 (disclosing a gate
driver and over-current detector for limiting the maximum duty ratio of the
motor if current exceeds threshold values in order to prevent the motor from
locking or the motor coil from burning out).
Appellant alleges that “the Examiner is interpreting the claim term
‘low-voltage cutoff’ to mean a cutoff when an overcurrent is detected.”
Appeal Br. 20. This is not the case. See Ans. 6 (accepting Appellant’s
asserted definition for “low-voltage cutoff”). The Examiner’s technical
explanation, discussed above, mentions overcurrent detection only in the
context of pointing out that Yanagihara’s controller will not limit the
maximum duty ratio of the motor as long at the current supplied to the motor
does not exceed 50 amps, so as to establish the type of operation the power
tool will permit while current can still be drawn from the battery pack (i.e.,
before low-voltage cutoff), not to establish the conditions at which low-
voltage cutoff will occur. Appellant does not specifically assert, much less
provide any evidence or persuasive technical reasoning to show, that
Yanagihara’s battery pack would be incapable of delivering the level of
current required by the power tool load as discussed on pages 9–11 of the
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Answer until substantially the point at which the low-voltage cutoff is
reached. Nor does Appellant specifically contest the Examiner’s
calculations.
The Mergener Declaration merely establishes that the particular
competitor power tools tested by Declarant did not produce the average
long-duration power output recited in claim 1 when operated in a particular
manner, and that Declarant is not aware of any hand-held power tools
available on the market at the time of Appellant’s invention that had such
capability. See Mergener Decl. ¶¶ 6–8, 13–14, App. A. Appellant
acknowledges that the Mergener Declaration is not asserted to show that
Yanagihara’s power tool is incapable of producing the claimed power
outputs. Reply Br. 4. Notably, none of the power tools tested by Declarant
achieved electric efficiency levels approaching 80 percent, like Yanagihara’s
power tool, nor is there any indication that the tools tested have controllers
with overcurrent limiters or MOS-FET resistance at or below 3 milliohms as
disclosed by Yanagihara. See Mergener Decl., App. A.
For the above reasons, based on the record before us, the Examiner
establishes a reasonable basis that Yanagihara’s tool is capable of being
operated so as to produce the average long-duration power output recited in
claim 1, and Appellant has not come forth with persuasive evidence or
technical reasoning to show that Yanagihara’s power tool structure is not
capable of being so operated. Therefore, Appellant does not apprise us of
error in the rejection of claim 1 as anticipated by Yanagihara. Accordingly,
we sustain the rejection of claim 1, and of claims 2, 3, 6, 7, and 10–12,
which fall with claim 1, as anticipated by Yanagihara.
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Claim 39
Appellant relies on the arguments presented for claim 1 in contesting
the rejection of claim 39. Appeal Br. 33. For the reasons discussed above,
these arguments do not apprise us of error in the rejection of claim 1, and,
likewise, fail to apprise us of error in the rejection of claim 39 as anticipated
by Yanagihara, which we, thus, sustain.
Obviousness—Yanagihara and one of Peot, Brotto, or Toukairin
Appellant does not present any arguments specifically directed to the
rejection of claims 4, 5, 8, and 9 as unpatentable over Yanagihara and Peot,
the rejection of claim 17 as unpatentable over Yanagihara and Brotto, or the
rejection of claims 31–34 as unpatentable over Yanagihara and Toukairin.
See Appeal Br. 32 (merely stating that dependent claims 4, 5, 8, 9, and 17
are patentable by virtue of their dependency from claim 1). For the reasons
discussed above, Appellant’s arguments do not apprise us of error in the
rejection of claim 1 as anticipated by Yanagihara and, likewise, fail to
apprise us of error in the rejections of claims 4, 5, 8, 9, 17, and 31–34.
Accordingly, we sustain the rejection of claims 4, 5, 8, and 9 as unpatentable
over Yanagihara and Peot, the rejection of claim 17 as unpatentable over
Yanagihara and Brotto, and the rejection of claims 31–34 as unpatentable
over Yanagihara and Toukairin.
Obviousness—Yanagihara, Tanimoto, and Peot
The Examiner finds that Yanagihara fails to explicitly disclose the
motor having an outer diameter between 60 and 80 millimeters and a weight
between 540 and 720 grams, as recited in claim 39. Final Act. 12. The
Examiner finds that Tanimoto teaches that as the weight of the motor
increases, the power consumption and output power also increase, and
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further discloses motor weights from 100 g to 1800 g, as well as motor
diameters between 15 mm and 60 mm. Id. at 13. The Examiner determines
it would have been obvious to modify the size/weight of Yanagihara’s motor
such that its weight is between 540 g and 720 g in order to achieve the
desired power output, such as the output disclosed by Yanagihara for the
intended use of the tool. Id. According to the Examiner, mere routine
experimentation with different sizes and weights of brushless motor to
achieve the desired power outputs would have been obvious and well within
the reach of a person of ordinary skill in the art at the time of Appellant’s
invention. Id.
The Examiner then finds that, although Tanimoto teaches the diameter
can be up to 60 mm, Tanimoto also discloses such a diameter would not be
desired because it hinders the ability of the tool to be gripped. Final Act. 14.
Thus, the Examiner directs our attention to Peot’s teaching of a motor
having a diameter ranging from 1.8 to 2.5 inches (approximately 45–63 mm)
that can output up to 1.5 horsepower (approximately 1100 Watts). Id. (citing
Peot 3:42–44; 5:26–45).
The Examiner finds that increasing the diameter of a brushless motor
to increase power consumption and output is well known in the art and
determines it would have been obvious to modify Yanagihara’s brushless
motor to have a diameter within the range taught by Peot, thereby allowing
the tool to have a more compact configuration while maintaining a high
power output and optimizing functional and ergonomic performance as
taught by Peot. Final Act. 14 (citing Peot 2:25–31). The Examiner adds that
“discovering the optimal or workable ranges (i.e., the weight of the motor)
involves only routine skill in the art.” Id. (citing In re Aller, 220 F.2d 454
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(CCPA 1955)). The Examiner notes that Appellant has not disclosed any
criticality for the claimed limitations and, thus, “mere routine
experimentation with different sized/weights of brushless motor in order to
achieve the desired outputs is viewed as obvious and would have been well
within the reach of one of ordinary skill in the art at the time of the
invention.” Id.
Appellant argues, in essence, that the combination of Yanagihara,
Tanimoto, and Peot does not teach or suggest a motor having a weight
between 540 grams and 720 grams that is capable of producing a maximum
short-duration power output of at least 650 Watts as claimed. Appeal Br. 28.
In particular, Appellant points out that the only correlation shown in the
references between motor weight and power is in Figure 18 of Tanimoto,
which includes a table showing motor weight and power consumption, not
power output. Id. Assuming the correlation between power consumption
and motor weight in Tanimoto’s Figure 18 is accurate, Appellant contends
that, even with Yanagihara’s 70–80% electric efficiency (optimized for
power output between 450 and 550 Watts), and Tanimoto’s power
consumption of 540–720 Watts (the indicated power consumption for a
motor between 540 and 720 g in Figure 18), “the power output cannot reach
the short-term output of 650 watts (80% x 720 watts = 576 watts).” Id.; see
also Reply Br. 8 (arguing same). According to Appellant,
One of ordinary skill in the art would therefore not have a
reasonable expectation of success of achieving the recited
power outputs when Tanimoto is combined with Yanagihara
and Peot. Since there is a lack of a reasonable expectation of
success, one of ordinary skill in the art would not combine the
disclosures of Tanimoto with the disclosure of Yanagihara and
Peot to arrive at the claimed feature.
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Reply Br. 8.
The Examiner explains, however, that Tanimoto is not relied on for
teaching the claimed power output, but, rather, is “relied upon for teaching a
common range of BLDC motor weight.” Ans. 19 (boldface omitted). The
Examiner relies on Peot “to teach the diameters of the motor.” Id. (boldface
omitted). The Examiner also points out that Tanimoto’s teaching in
paragraph 253 regarding a correlation between weight and power
consumption also reasonably implies a correlation between weight and
power output. Id.
The Examiner is correct that Tanimoto teaches a correlation between
the weight of the motor and the motor power output. See Tanimoto ¶ 253.
Specifically, although Tanimoto discloses that its motor 506 generates
sufficient torque despite its reduced size, Tanimoto also teaches that
“[g]enerally, weight of the motor is increased in accordance with an increase
in power consumption” and that “output power of the motor is increased in
accordance with the increase in power consumption to enhance workability
or operability.” Id. Tanimoto also cautions that “if the power consumption
of the motor is excessively increased, the motor becomes too heavy.” Id.
Tanimoto and Peot both appear to suggest that it is possible to reduce
the size of a motor and still achieve a predetermined motor output, and that it
is possible to achieve a power output of at least 650 Watts with a motor
having a diameter within the claimed range. See Tanimoto ¶ 253, Peot
5:26–45. Further, Tanimoto teaches that the weight of the motor can be
selected to achieve the desired output power. Tanimoto ¶ 253. However, as
Tanimoto teaches, while it is possible to reduce the diameter of the motor
without reducing its torque capacity, the weight of the motor increases with
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an increase in power consumption and output. Id. Tanimoto gives no
indication that the weight of the motor can be reduced while still
maintaining the same output power capacity. Given the one-to-one
correspondence between motor weight (in grams) and power consumption
(in Watts) in Table 2 of Tanimoto’s Figure 18, it appears that a motor having
a weight within the range recited in claim 21 would be able to consume no
more than 720 Watts of power and, thus, would be able to output no more
than 576 Watts of power, even at the 80 percent electrical efficiency
disclosed by Yanagihara. Therefore, although the Examiner’s position that
it would have been obvious to determine by routine experimentation the
optimum weight and size motor to achieve the desired output power for the
tool appears reasonable, based on the record before us, it is not apparent that
a person having ordinary skill in the art would have had a reasonable
expectation of success in designing a power tool with a motor within the
claimed weight range that could produce an output power of greater than
650 Watts, as recited in claim 21.
Thus, the Examiner fails to establish that the subject matter of claim
21 would have been obvious at the time of Appellant’s invention in view of
the combined teachings of Yanagihara, Tanimoto, and Peot. Accordingly,
we do not sustain the rejection of claim 21 or of claim 23, which depends
from claim 21, as unpatentable over Yanagihara, Tanimoto, and Peot.
Obviousness—Yanagihara, Tanimoto, Peot, and Toukairin
The Examiner’s application of Toukairin’s teaching of incorporating
cooling features does not make up for the aforementioned deficiency in the
combination of Yanagihara, Tanimoto, and Peot with respect to claim 21,
from which claims 35 and 36 depend. See Final Act. 20. Accordingly we
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do not sustain the rejection of claims 35 and 36 as unpatentable over
Yanagihara, Tanimoto, Peot, and Toukairin.
Obviousness—Yanagihara and Liebhard
Claims 13 and 14
Appellant relies on the arguments presented against the rejection of
claim 1 as anticipated by Yanagihara in contesting the rejection of claims 13
and 14. See Appeal Br. 32. For the reasons discussed above, Appellant’s
arguments do not apprise us of error in the rejection of claim 1 as anticipated
by Yanagihara and, likewise, fail to apprise us of error in the rejection of
claims 13 and 14 as unpatentable over Yanagihara and Liebhard, which we,
thus, sustain.
Claims 25, 28, and 30
The Examiner finds that Yanagihara fails to disclose that the power
tool is capable of producing a maximum short-duration power output of at
least 950 Watts. Final Act. 16. The Examiner finds that Liebhard teaches a
power tool comprising a brushless motor that is capable of producing
anywhere from 500 to 5000 Watts with a battery pack having voltages
ranging from 12 volts to 150 volts. Id. The Examiner also finds that altering
a tool to increase its versatility and capabilities of handling higher loads is
known. Id. at 17. The Examiner then determines it would have been
obvious to modify Yanagihara’s tool for a higher output as taught by
Liebhard because increasing the power rating/capacity of Yanagihara’s
motor would achieve greater workability. Id.
Appellant argues that Liebhard “does not provide a correlation
between particular battery pack voltages and power outputs such that one of
ordinary skill in the art can conclude that a power tool including a power
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pack having a nominal voltage of 16.2 Volts and 19.8 Volts produces a
power output of 950 watts.” Appeal Br. 29; see also Reply Br. 9–10
(arguing same). According to Appellant, without a reasonable expectation
of success, one of ordinary skill in the art would not combine Liebhard with
Yanagihara’s tool to arrive at the claimed subject matter. Id. at 10.
In response, the Examiner explains that a battery pack can be
modified to provide higher power to the motor either by increasing the
voltage (by connecting more cells in series) or by increasing the current (by
connecting more cells in parallel) without increasing the nominal voltage of
the battery pack. Ans. 20. Liebhard supports the Examiner’s position in this
regard, and teaches that the voltage of the battery pack needed depends on
the particular configuration of the cells of the battery pack (serial or parallel
connection). Liebhard ¶ 25. Thus, a person having ordinary skill in the art
would have understood how to provide a battery pack capable of outputting
the necessary wattage within the claimed voltage range.
Appellant additionally argues that paragraph 12 of the Mergener
Declaration states that “Declarant is not aware of an 18 Volt
battery-powered power tool available at the time of the present application
that provided such maximum output levels.” Appeal Br. 29 (discussing the
wattages of the three power tools tested and reported in Appendix A). This
argument is not persuasive. Merely that Declarant was not aware of a
commercially available power tool having such capacity at the time of
Appellant’s invention does not suggest that a power tool having such
capacity was beyond the technical grasp of a person having ordinary skill in
the art at the time of Appellant’s invention who desired to design a tool
having such capacity.
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For the above reasons, Appellant does not apprise us of error in the
rejection of claim 25 as unpatentable over Yanagihara and Liebhard.
Accordingly, we sustain the rejection of claim 25, and of claims 28 and 30,
which depend from claim 25 and for which Appellant does not present any
separate arguments, as unpatentable over Yanagihara and Liebhard. See
Appeal Br. 32 (relying solely on dependence from claim 25 in contesting the
rejections of claims 28 and 30).
Obviousness—Yanagihara and Liebhard, in view of either Peot or Toukairin
In contesting these rejections of claims 15, 16, 29, 37, and 38,
Appellant relies solely on the dependence of these claims from either claim
1 or claim 25. Appeal Br. 32. For the reasons discussed above, Appellant’s
arguments do not apprise us of error in the rejection of claims 1 and 25 as
unpatentable over Yanagihara and Liebhard and, likewise, fail to apprise us
of error in the rejection of claims 15, 16, and 29 as unpatentable over
Yanagihara, Liebhard, and Peot or the rejection of claims 37 and 38 as
unpatentable over Yanagihara, Liebhard, and Toukairin, which we, thus,
sustain.
Obviousness—Toukairin and Yanagihara
Claims 1–3, 6, 7, 10–14, 17, and 31–34
In contesting this rejection as to these claims, Appellant does not
present any separate arguments for claims 2, 3, 6, 7, 10–14, 17, and 31–34,
aside from their dependence from claim 1. We decide the appeal of this
rejection on the basis of claim 1, and claims 2, 3, 6, 7, 10–14, 17, and 31–34
stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(iv).
The Examiner relies on Yanagihara for its teachings with regard to
using an 18 volt lithium based battery pack and switches having a small
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drain-to-source resistance of below 3 milliohms. Final Act. 25–26.
According to the Examiner, because Toukairin, as modified in view of
Yanagihara, discloses the claimed structure, including the heat sinks, PCB
configuration, cooling fan, switching array, and battery configuration
claimed, it can reasonably be assumed that Toukairin’s tool can produce the
power outputs (average long-duration power output of at least 300 Watts and
maximum short-duration power output of at least 400 Watts) recited in
claim 1. Id. at 26.
In contesting the rejection of claim 1, Appellant essentially reiterates
the arguments presented against the rejection of claim 1 as anticipated by
Yanagihara. Appeal Br. 24–25. These arguments are not persuasive for the
reasons discussed above in addressing the anticipation rejection of claim 1.
The modified Toukairin power tool appears to be equipped with all of the
structural features to which Appellant appears to attribute the power output
capability. See, e.g., Spec. ¶ 11 (discussing reducing the internal resistance
of one or more of the motor, battery pack, and electronics and improving the
ability of the power tool to dissipate heat), ¶¶ 39–40 (disclosing the use of
FETs having a drain-to-source resistance of below approximately 3.0 milli-
Ohms in combination with, for example, heat sinking and cooling air flow,
to enable increased drive currents to be passed through the FETS and
provided to the motor); Toukairin ¶¶ 32–33 (disclosing a cooling fan for
cooling the motor), ¶ 52 (disclosing a heat sink for heat dissipation);
Yanagihara ¶¶ 9–10 (disclosing MOS-FET resistance at or below 3 milliohm
to increase overall electric efficiency), ¶ 44 (disclosing a gate driver and
over-current detector for limiting the maximum duty ratio of the motor if
current exceeds threshold values in order to prevent the motor from locking
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or the motor coil from burning out). Thus, the Examiner’s determination
that the modified tool of Toukairin would be capable of being operated so as
to produce the claimed power outputs is reasonably supported by the
evidence of record. Nothing in the Mergener Declaration effectively refutes
the Examiner’s findings. Notably, none of the power tools tested by
Declarant achieved electric efficiency levels approaching 80 percent, like
Yanagihara’s power tool, nor is there any indication that the tools tested
have controllers with heat sinking, air cooling, or overcurrent limiters or
MOS-FET resistance at or below 3 milliohms as disclosed by Yanagihara.
See Mergener Decl., App. A. Thus, the fact that the particular tools tested
did not produce the claimed power output when operated in the manner used
in the testing is not particularly germane to the issue of whether Toukairin’s
power tool, modified in view of Yanagihara as proposed by the Examiner,
would be capable of being operated in a manner to produce such power
outputs.
Appellant, therefore, fails to apprise us of error in the rejection of
claim 1 as unpatentable over Toukairin and Yanagihara. Accordingly, we
sustain the rejection of claim 1, and of claims 2, 3, 6, 7, 10–14, 17, and 31–
34, which fall with claim 1, as unpatentable over Toukairin and Yanagihara.
Claims 25, 28, 30, 37, and 38
In contesting this rejection as to these claims, Appellant does not
present any separate arguments for claims 28, 30, 37, and 38, aside from
their dependence from claim 25. Appeal Br. 32. Thus, we consider claim
25, and claims 28, 30, 37, and 38 stand or fall with claim 25. See 37 C.F.R.
§ 41.37(c)(1)(iv).
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Significant differences between claim 25 and claim 1 include that
claim 25 does not recite an average long-duration power output, but claims a
higher maximum short-duration power output (at least 950 Watts) than claim
1, and claim 25 additionally recites that the nominal voltage of the battery
pack is between 16.2 volts and 19.8 volts. Compare Appeal Br. 41 (Claims
App.), with id. at 35. The Examiner determines that the “mere manipulation
of size, weight and impedance of the battery, motor, and circuitry to obtain
the claimed values of power output” would have been obvious because
determination of optimum ranges/values of such variables to achieve a
recognized result (higher power outputs) amounts to routine
experimentation. Final Act. 27 (citing In re Aller, 220 F.2d 454, and In re
Antonie, 559 F.2d 618 (CCPA 1977)).
Appellant argues that neither Toukairin nor Yanagihara discloses,
either implicitly or inherently, a power tool that produces a maximum
short-duration power output of at least 950 Watts, as recited in claim 25.
Appeal Br. 30. This argument is not persuasive because it is not responsive
to the rejection set forth by the Examiner. The Examiner does not find that
either Toukairin or Yanagihara teaches or inherently discloses a power tool
producing a maximum short-duration power output of at least 950 Watts.
Rather, the Examiner determines that the claimed power output is not a
patentable distinction over the Toukairin power tool modified in view of
Yanagihara because, according to the Examiner, selecting the size, weight,
and impedance of the motor and the battery to achieve the desired power
output is an obvious matter of routine optimization.
Similarly, Appellant’s arguments that Declarant is not aware of a
power tool available at the time of the present application that provided such
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maximum output levels and that the power tools tested, as reported in
Appendix A of the Mergener Declaration, produced power outputs lower
than the claimed 950 Watts (Appeal Br. 31) are unavailing. The Examiner’s
rejection is not based on a determination that all power tools having the
configuration of Toukairin, with an 18 volt battery pack and switches as
taught by Yanagihara, will necessarily have the capacity to output at least
950 Watts. Rather, as discussed above, the Examiner determines that
modifying the motor and battery to achieve a higher desired power output
would have been obvious as a matter of routine optimization. To the extent
that Appellant may be suggesting that a power tool having a battery pack
with a nominal voltage of 18 volts, as taught by Yanagihara, would be
insufficient to supply the current necessary to power Toukairin’s power tool
to produce the claimed power output of 950 Watts, we note that the
Examiner explains that a battery pack can be modified to provide higher
power to the motor either by increasing the voltage (by connecting more
cells in series) or by increasing the current (by connecting more cells in
parallel) without increasing the nominal voltage of the battery pack.
Ans. 20.
Appellant argues that “[d]iscovering an optimum range is only
obvious when the prior art combination discloses overlapping, approaching,
and similar ranges.” Reply Br. 10 (citing Manual of Patent Examining
Procedure (MPEP) § 2144.05(I)). Appellant’s reliance on this portion of the
MPEP is misplaced because it does not address routine optimization, which
is addressed in MPEP § 2144.05(II) (9th ed., rev. 08.2017, Jan. 2018)
without any mention of a requirement that the prior art range be overlapping,
approaching or similar to the claimed range. Merely by way of example, in
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Aller, the claimed process performed at a concentration between 25% and
70% at temperatures between 40 degrees and 80 degrees was held to be
unpatentable over a prior art process performed at a 10% concentration and
at a temperature of 100 degrees. See Aller, 220 F.2d at 455–458. The prior
art ranges of temperature and concentration are not approaching,
overlapping, or similar to the claimed ranges.
Factors considered by the court in Aller included whether the
particular ranges claimed produce a new and unexpected result that is
different in kind and not merely in degree from the results of the prior art,
and whether the modification was within the capabilities of one skilled in the
art. Id. at 456. “More particularly, where the general conditions of a claim
are disclosed in the prior art, it is not inventive to discover the optimum or
workable ranges by routine experimentation.” Id. Appellant does not assert,
much less provide any evidence or persuasive technical reasoning to show,
that increasing the capacity of the motor and/or battery pack of Toukairin,
modified in view of Yanagihara, to achieve a higher power output would
yield unexpected results or be beyond the technical grasp of a person having
ordinary skill in the art.
Thus, Appellant does not apprise us of error in the rejection of claim
25. Accordingly, we sustain the rejection of claim 25, as well as claims 28,
30, 37, and 38, which fall with claim 25, as unpatentable over Toukairin and
Yanagihara.
Obviousness—Toukairin, Yanagihara, and Liebhard
The Examiner articulates this rejection as an alternative to the
rejection of claims 1–3, 6, 7, 10–14, 17, 25, 28, 30–34, 37, and 38 as
unpatentable over Toukairin and Yanagihara. Final Act. 27–28. The
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Examiner finds that Liebhard teaches a power tool comprising a brushless
motor that can produce an output anywhere from 500 to 5000 Watts and a
battery pack that can be configured with voltages ranging from 12 volts to
150 volts. Id. (citing Liebhard ¶¶ 23–24). The Examiner finds that altering
a tool to increase its versatility and capabilities of handling higher loads is
known and determines it would have been obvious to modify Toukairin’s
motor further such that a higher power (i.e., above 950 Watts or 300 Watts
over long duration) can be outputted, as taught by Liebhard, in order to
increase the power rating/capacity of Toukairin’s motor to achieve greater
workability. Id. at 28.
Claims 1–3, 6, 7, 10–14, 17, and 31–34
Appellant argues that Liebhard does not remedy the aforementioned
deficiencies of the combination of Toukairin and Yanagihara. Appeal
Br. 26–27. For the reasons discussed above, Appellant fails to apprise us of
deficiencies in the combination of Toukairin and Yanagihara in regard to
claim 1 and, likewise, fails to apprise us of error in the rejection of claim 1
as unpatentable over Toukairin, Yanagihara, and Liebhard. Accordingly, we
sustain the rejection of claim 1, and of claims 2, 3, 6, 7, 10–14, 17, and 31–
34, which depend from claim 1 and for which Appellant does not present
any separate arguments, as unpatentable over Toukairin, Yanagihara, and
Liebhard.
Claims 25, 28, 30, 37, and 38
In addition to arguing that Liebhard does not cure deficiencies in the
combination of Toukairin and Yanagihara, Appellant also argues that
Liebhard “does not provide a correlation between particular battery pack
voltages and power outputs such that one of ordinary skill in the art can
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conclude that a power tool including a battery pack having a nominal
voltage of 18 V produces a power output of 950 watts.” Appeal Br. 32; see
Reply Br. 11 (arguing same). Appellant contends that “because increasing
the power provided to the motor requires additional battery packs connected
in series to the battery packs of the tool disclosed by Yanagihara and
Toukairin, Liebhard teaches against the combination of the higher power
motor with the rest of the structure disclosed by Yanagihara and Toukairin.”
Reply Br. 11. This argument is not persuasive because, as discussed above,
the Examiner explains that a battery pack can be modified to provide higher
power to the motor either by increasing the voltage (by connecting more
cells in series) or by increasing the current (by connecting more cells in
parallel) without increasing the nominal voltage of the battery pack.
Ans. 20; see Liebhard ¶ 25 (teaching that the voltage of the battery pack
needed depends on the particular configuration of the cells of the battery
pack (serial or parallel connection)). Thus, a person having ordinary skill in
the art would have understood how to provide a battery pack capable of
outputting the necessary wattage within the claimed voltage range.
For the above reasons, Appellant does not apprise us of error in the
rejection of claim 25 as unpatentable over Toukairin, Yanagihara, and
Liebhard. Accordingly, we sustain the rejection of claim 25, and of claims
28, 30, 37, and 38, which depend from claim 25 and for which Appellant
does not present any separate arguments, as unpatentable over Toukairin,
Yanagihara, and Liebhard.
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DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
39 112, fourth
paragraph
Improper
Dependency
39
1–3, 6, 7,
10–12, 39
102(a) and
(e)
Yanagihara 1–3, 6, 7,
10–12, 39

4, 5, 8, 9 103(a) Yanagihara, Peot 4, 5, 8, 9
21, 23 103(a) Yanagihara,
Tanimoto, Peot
21, 23
13, 14, 25,
28, 30
103(a) Yanagihara,
Liebhard
13, 14, 25,
28, 30

15, 16, 29 103(a) Yanagihara,
Liebhard, Peot
15, 16, 29
31–34 103(a) Yanagihara,
Toukairin
31–34
35, 36 103(a) Yanagihara,
Tanimoto, Peot,
Toukairin
35, 36
37, 38 103(a) Yanagihara,
Liebhard,
Toukairin
37, 38
17 103(a) Yanagihara, Brotto 17
1–3, 6, 7,
10–14, 17,
25, 28, 30–
34, 37, 38
103(a) Toukairin,
Yanagihara
1–3, 6, 7,
10–14, 17,
25, 28, 30–
34, 37, 38

1–3, 6, 7,
10–14, 17,
25, 28, 30–
34, 37, 38
103(a) Toukairin,
Yanagihara,
Liebhard
1–3, 6, 7,
10–14, 17,
25, 28, 30–
34, 37, 38

Overall
Outcome
1–17, 25,
28–34, 37–
39
21, 23, 35,
36

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TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED IN PART